How To Select a Strong Trademark
In trademark law, distinctiveness is key. The more distinctive a mark, the stronger its legal protection—and the easier to register and enforce the mark. Trademark law classifies marks along a spectrum of distinctiveness,...more
In Karneolis LTD v. EU Intellectual Property Office and Match Group LLC,[1] the EU General Court ruled in favour of Match Group LLC, the dating app conglomerate that owns and operates, among others, Tinder, Hinge, and...more
In this episode of The Upper Brand, Kristine Young and Rich Assmus discuss the recent Federal Circuit case regarding the doctrine of foreign equivalents in trademark law. They explore the concepts of descriptiveness and...more
The Federal Circuit’s recent decision in Heritage Alliance v. American Policy Roundtable, Case No. 24-1155 (Fed. Cir. Apr. 9, 2025), provides a salient reminder to brand owners seeking to build value in descriptive trademarks...more
Suppose you want to register a trademark that identifies a source of goods/services for your business. What if the trademark describes an ingredient, quality, feature, function, characteristic, or purpose of your...more
Building a strong and distinctive brand identity for your business is crucial for driving sales, fostering consumer loyalty, and standing out in any industry, and more so for emerging and rapidly evolving sectors such as...more
The US Court of Appeals for the Second Circuit reversed a district court’s grant of preliminary injunction for abuse of discretion based on an erroneous evaluation of the strength of the “inherently descriptive” marks at...more
A “trademark” is any word, phrase, logo or design that identifies the source of goods or services. Trademarks are used to distinguish one’s products and services from those of another. The strength of a trademark depends on...more
Joining a series of precedential decisions about descriptiveness, the Trademark Trial and Appeal Board recently affirmed a refusal to register Sheet Pile, LLC’s (“Applicant”) mark ZPILE on the Principal Register, on the...more
Welcome to the March 2024 issue of Sterne Kessler’s MarkIt to Market® newsletter. This month, we discuss the IPR Center’s efforts to stop global IP theft and address counterfeiting on both home and foreign turf; a recent TTAB...more
The US Court of Appeals for the Second Circuit affirmed a district court’s grant of summary judgement to a luxury-watchmaker defendant, holding that its use of a registered and incontestable trademarked term was fair use...more
Branding is critical for emerging companies in the healthy food and beverage (“F&B”) space. Strong brands can help companies stand out from competitors and build trust and loyalty with customers. For emerging companies, a...more
On May 13, 2021, the Québec government introduced Bill 96, An Act respecting French, the official and common language of Québec (the Bill), proposing significant amendments to Québec’s Charter of the French Language (the...more
GALPERTI, INC. v. GALPERTI S.R.L. Before: Moore, Prost, Taranto. Appeal from the Trademark Trial and Appeal Board. Summary: Evidence of use of a term even without a showing of secondary meaning, by any third party,...more
In an industry that runs on innovation and differentiation, a cannabis brand’s identity is among its most valuable—and most prone to copying—assets. It’s a common myth that cannabis industry brands cannot get trademark...more
On March 5, 2021, the U.S. Trademark Trial and Appeal Board (“TTAB”) issued a precedential decision affirming refusal of SolarWindow Technologies, Inc.’s application to register the word mark POWERCOATINGS. The decision is a...more
One of the first things entrepreneurs will need to do when branding new companies is to seek and obtain trademark protection. In addition, companies may at times seek to use third party trademarks without formally licensing...more
Last month, the U.S. Patent and Trademark Office (PTO) issued a guidance document describing how they plan on following the Supreme Court’s recent decision in U.S. Patent and Trademark Office v. Booking.com. This document...more
The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal...more
In U.S. Patent and Trademark Office v. Booking.com B.V., the Supreme Court held that a term that combines a generic word with “.com” is not generic if consumers perceive the term to signify the source of a product and thus...more
The June 30th Supreme Court decision in Booking.com held that generic terms coupled with top-level domain names can be eligible for trademark registration. This decision is a win for brand owners as it reinforces how – in the...more
The U.S. Supreme Court has ruled that Booking.com B.V., the owner of the hotel-reservation website of the same name, is entitled to register the mark BOOKING.COM with the United States Patent and Trademark Office (“USPTO”)....more
In an 8-1 decision delivered by Justice Ginsburg, the Supreme Court declined to adopt a per se rule that combining a generic term with “.com” necessarily yields a generic mark ineligible for federal trademark registration....more
On June 30, the Supreme Court, in an 8-1 decision, issued a highly anticipated decision in United States Patent and Trademark Office et al. v. Booking.Com B.V. answering the question whether a trademark consisting of a...more
In the ruling handed down this week in United States Patent and Trademark Office v. Booking.com B.V., No. 19-46, the United States Supreme Court voted 8-1 to affirm lower court rulings holding the trademark applications for...more